The Emerging Jurisprudence of Domain Name Dispute Resolution

by Trenton H. Norris, Barbara L. Friedman, and Rebecca Hooley
          Norris Bio               Friedman Bio                   Hooley Bio

The global procedure for resolving disputes over Internet domain names is little more than a year and a half old.  The first dispute under the Uniform Domain Name Dispute Resolution Policy (“UDRP”)[1] was accepted on December 1, 1999 and decided six weeks later.  Since then, more than 3,000 cases have been filed.  Decisions in these cases have no formal precedential value, but it was inevitable that parties would cite prior decisions in their arguments.  And since the UDRP directs each panel to decide the case before it based on “any applicable rules and principles of law that it deems applicable,” it was inevitable that panelists, too, would look to the decisions of past panels for guidance.[2]

As a result, various principles are beginning to emerge as a distinct jurisprudence of domain name dispute resolution.  We sought to discern the rough outlines of this nascent body of law by examining the 25 decisions that were cited most often by the panelists in the written decisions that have been rendered through January 15, 2001.[3]

Interestingly, despite the vast number of decisions issued in the first year of the UDRP, a decision had to be cited no more than 20 times to make it into the top 25.  Indeed, only one case has been cited more than 60 times.  A number of factors may have contributed to this phenomenon.  First, UDRP panelists generally cite only a few prior decisions.  Their decisions are shorter and more to the point than those of common law judges, who can rely on clerks for exhaustive research on a more generous schedule.  Second, although a list of all UDRP decisions is available on the Internet,[4] it was not until May, 2000 that the text of the decisions was searchable, thanks to the efforts of Harvard Law School’s Berkman Center for Internet and Society.[5]  In the meantime, many disputes were argued and decided in the absence of comprehensive information about prior decisions.  Third, the UDRP does not require individual arbitrators or panels to justify their rulings based on prior decisions; citations are purely a matter of discretion. 

Our review of decisions indicates a growing use of citations, which is not surprising as the body of  decisions grows.  On the one hand, this trend may make the UDRP process less accessible to laypersons.  On the other hand, the citation of prior decisions can only help to make UDRP decisions more consistent and predictable, thereby increasing the overall efficiency of the domain name allocation process.

The most frequently cited cases are not necessarily the most interesting or groundbreaking.  Indeed, they often deal with recurring fact patterns and routine issues.  Furthermore, since the UDRP process is one of intensely fact-based decision-making, involving hundredsof panelists who make independent decisions on “the admissibility, relevance, materiality and weight of the evidence,”[6]  the most cited cases are not controlling in a future dispute.  They nevertheless reflect a high degree of consensus among panelists as to fundamental principles of domain name dispute resolution. 

We identified five key issues addressed by the 25 most-cited decisions.  Generally reflecting the core elements of the UDRP, these issues are:  (1) the complainant’s standing; (2) other procedural issues; (3) bad faith; (4) confusing similarity; and (5) legitimate interests in the domain name.  Following a brief summary of the UDRP, we examine each of these five issues and the principles established by the most-cited cases.

A Summary of the UDRP

The UDRP requires that a successful complainant prove three things: (1) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) that the domain name holder has no rights or legitimate interests in the domain name; and (3) that the domain name was registered and is being used in bad faith.

The Policy provides no guidance on how to prove or disprove the question of confusing similarity; that issue is presumably in the eye of the beholder.  It does, however,  provide illustrative examples of the second and third factors.  As new cases have been brought, additional examples of facts or conduct satisfying each of the three factors have emerged.

To prove that the domain name holder (the “respondent”) does have a legitimate interest in the domain name (the second factor), the UDRP provides a non-exclusive list of three circumstances that are sufficient to demonstrate the respondent’s right to the domain name:  (1) the respondent can demonstrate that before it received any notice of the complainant’s rights, it had used or planned to use the domain name in a legitimate manner; (2) the domain name corresponds with a name by which the respondent is commonly known; or (3) the respondent is making a fair noncommercial use of the domain name.[7]

For the third factor, the Policy provides four non-exclusive examples of bad faith use and registration:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location.[8]

The procedures under the UDRP are not complicated.  A dispute is initiated by filing a complaint meeting certain requirements with one of several authorized dispute resolution providers and simultaneously sending the complaint to the domain-name holder and the domain name registrar.  Once the dispute resolution provider determines that the complaint meets procedural requirements, the domain-name holder has 20 days to respond.  Either party may elect to have the dispute heard by a three-member panel.  The full cost of the proceeding is typically borne by the complainant, but if the respondent chooses a three-member panel, it must pay half the cost of the proceeding.

Although in-person hearings are authorized in extraordinary circumstances, the decisions issued to date have been based on the written submissions of the participants.[9]  Panel decisions must be in writing and provide the reasons on which they are based.

The Emerging Principles

Standing

The standing issue concerns the rights a complainant must assert in order to proceed under the UDRP.  Before the UDRP was adopted, Network Solutions, Inc. (“NSI”) held a monopoly on the registration of domain names.  Under NSI’s dispute resolution policy, a trademark owner could only object to the registration of a domain name if it possessed a prior valid U.S. trademark registration on the Principal Register (or a comparable foreign registration) for a mark identical to the domain name.  Common law trademark rights, registrations on the Supplemental Register, and state trademark registrations were irrelevant under NSI’s policy.

Under the UDRP, by contrast, the complainant must only show that the disputed domain name is identical or confusingly similar to a mark in which it has rights.  The UDRP does not specify what type of rights are required.  Several of the 25 most-cited cases have addressed this issue, and it is now clear that the successful complainant need not possess a registered mark.

In the two cases in the top 25 involving personal names, Julia Roberts v. Russell Boyd and Jeanette Winterson v. Mark Hogarth, both panels concluded that the complainants’ common law rights in their own names were sufficient to bring an action under the UDRP.[10]    This is important because few individuals hold trademark registrations for their names.

In Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company  (cited 21 times), the complainant published two daily papers concerning news of India.[11]  The respondent argued that the complainant had no trademark registrations in the United States, where the respondent’s domain name was hosted, and further that complainant had allowed its trademark registrations in India to lapse and thus had no rights upon which to base an action.  The panel disagreed, finding it irrelevant that the Indian registrations may have lapsed, because it was clear that the complainant had developed a substantial reputation in its newspaper titles and that “it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks.”[12]  Given the worldwide nature of the Internet, the panel also found it irrelevant that the complainant had no registrations in the country in which the domain name was hosted.

In Seek America Networks, Inc. v. Tariq Masood and Solo Signs, the final case on our list concerning the standing issue, seven months of common law use and a pending Canadian trademark application were also deemed sufficient to establish the complainant’s rights in the mark.[13]  Compared to NSI’s narrow standing requirements, the UDRP has clearly lowered the bar for complainants to bring a domain name dispute.

Procedural Issues

Before reaching the merits of a domain-name dispute, the panel often must consider various procedural issues.  The third most-cited decision, with the most extensive discussion of procedural issues by far, is Talk City, Inc. v. Michael Robertson (cited 56 times).[14]  The panel in this case adhered closely to the procedural process set out in the UDRP, stating that “[i]nconsistent approaches to the Rules will only cause a loss in confidence in the Uniform Domain Dispute Resolution Policy.”[15] 

In Talk City, the respondent failed to respond to the complaint.  However, after being notified of the appointment of a panel to decide the case, respondent’s counsel submitted an e-mail to the arbitration provider requesting that the proceeding be terminated in light of the parties’ settlement negotiations.   Two weeks later, counsel filed a “Request for Termination of Proceedings and to Set Aside Default.”  Rules 10(a) and 10(d) give the panel discretion in such circumstances to determine what weight to accord the response.  The panel decided to accept the earlier e-mail, but found that the respondent’s failure to certify that the information contained in his e-mail was “to the best of Respondent’s knowledge complete and accurate” resulted in mandatory disqualification of the correspondence under Rule 5(b).[16]

Given the respondent’s failure to submit a timely answer, the panel ruled that it would accept all the allegations of the complainant.  The panel made its decision on the basis of Rule 14(b), which states that the panel “shall draw such inferences” from respondent’s failure to comply with the rules “as it considers appropriate,” and Rule 14(a), which directs the panel to “proceed to a decision” on the complaint when the respondent defaults.[17]   The panel also cited Rule 15(a), which provides that the panel is charged with rendering its decision “on the basis of the statements and documents submitted.”

The Talk City panel further found that respondent’s request to set aside the default should be denied because he had knowledge of the approaching panel decision and even participated in settlement negotiations with the complainant.[18]  Respondent’s argument as to the time and manner of response due was also denied on the basis that the rules sent to both respondent and his counsel were clear on the issue.[19]  Furthermore, respondent, an Internet CEO, and his counsel from a well-known law firm were found to be sophisticated parties who should have been able to comply with the UDRP.[20]

The Panel also refused respondent’s Rule 15(e) request to terminate the proceedings on the basis that they had been brought in bad faith simply to harass respondent.  Complainant’s attempt to buy respondent’s domain name was found to be insufficient evidence of intent to harass.[21]

Finally, the respondent in Talk City offered to give all the relief complainant requested, but the panel found that in the absence of the complainant’s acceptance, the complainant was still entitled to a decision by the panel.  The panel ruled this was consistent with the mandate of Rule 14(a) that, in the event of a default, the panel “shall decide the dispute based upon the complaint,” absent exceptional circumstances.[22]

Bad Faith

The three most cited cases all address the issue of bad faith, the third element under the UDRP and the most difficult to establish.  With 184 citations, the decision in Telstra Corporation Limited v. Nuclear Marshmallows  is far and away the most cited case to date.[23]  The complainant in Telstra was the largest provider of telecommunication and information services in Australia and owned more than 50 Australian trademark registrations (and numerous foreign registrations) containing the term TELSTRA.  The respondent, owner of the domain name telstra.org, did not file an answer to the complaint.  The respondent had provided an Australian post office box address to the domain name registrar.  Numerous attempts by the complainant to contact the respondent at this address were unsuccessful, and no record of the business name Nuclear Marshmallows existed with Australia’s company name registrar.  The panel quickly found that the domain name was identical or confusingly similar to the complainant’s trademark and that the respondent had no rights or legitimate interest in the “telstra” name.[24] 

The panel then turned to the issue of bad faith.  It first concluded that the UDRP requires the complainant to prove that the domain name was registered in bad faith and that it is being used in bad faith; i.e., that the bad faith had to exist at the time the domain name was registered and must have continued thereafter.  Bad faith registration was found based on two facts: (1) the respondent deliberately attempted to obscure its identity when registering the domain name,[25] and (2) the complainant’s marks were so well known that it was inconceivable  the respondent was not aware of them at the time the domain name was registered.

The difficult issue for the panel in the Telstra case, and the point for which it is most frequently cited, was bad faith use of the domain name.  The respondent’s activities did not fall into any of the four evidentiary illustrations listed in the UDRP.  In fact, the respondent had not made any use of the domain name at all.  There was no website connected to the domain name, nor was there any evidence of advertising, promotion, or display of the domain name, nor had the respondent made any offer or attempt to sell the domain name.  The panelist nevertheless found that there is a distinction between “undertaking a positive action in bad faith” and “acting in bad faith,” and that the latter could be satisfied by inaction or passive holding where there was no possible use the respondent could have made of the domain name that would have been legitimate.  As a result, the inaction of the respondent was not a bar to the complainant ultimately obtaining ownership of the domain name.

The second and third most cited cases – Educational Testing Service v. TOEFL[26]  (cited 60 times) and Talk City – also addressed the question of proving bad faith.  In TOEFL, the panel found that a general offer to sell a domain name constituted use and registration in bad faith, where the value that the domain name holder sought to secure from the sale was based on the value of the complainant’s trademark.  Bad faith use and registration was found in Talk City based on the respondent’s having registered and used the talk-city.com domain name and other domain names corresponding to well-known Internet companies in order to misdirect traffic to its site.

Other factors in the top 25 cases thatwere found to constitute evidence of bad faith are: (1) using complainant’s mark to route users to a pornographic website, Ingersoll-Rand Co. v. Frank Gully[27] (cited 20 times); (2) offering to sell the domain name and failure to make a good faith use of the domain name for two years following registration, Mary-Lynn Mondich;[28] 3) ownership of more than 40 domain names, many of which were well-known product names,[29] General Electric Company v. Forddirect.com, Inc. (cited 20 times) offering to sell the domain name at issue for more than out-of-pocket costs, Nabisco Brands Company v. The Patron Group, Inc.[30] (cited 25 times);  and (4) offering to sell a domain name for $70,000, Ronson Plc v. Unimetal Sanayi[31] (cited 22 times).  Offering to sell a domain name for $1,000 was sufficient to prove use of a domain name in bad faith in World Wrestling Federation Entertainment, Inc. v. Bosman[32] (cited 21 times), and merely listing a domain name on a broker’s website as “for sale” was sufficient in Robert Ellenbogen v. Mike Pearson[33] (cited 25 times).  Similarly, a notation in the “Whois” registration record stating “This domain is for sale” was sufficient evidence of bad faith, where the same legend was contained in the records for other domain names registered by the same respondent.  Parfums Christian Dior v. QTR Corp.[34]  (cited 21 times).  These cases make clear that it is extremely difficult for a respondent to prevail under the UDRP if it is attempting to profit by dealing in domain names in which others have legitimate interests.

In Veuve Cliquot Ponsardin v. The Polygenix Group Co.[35] (cited 23 times), the fame of the VEUVE CLIQUOT mark was found to be so great that its very use by someone with no connection with the product was sufficient to suggest opportunistic bad faith.  Similarly, the panel in Deutsche Bank AG v. Diego-Arturo Bruckner[36](cited 20 times), found that “[t]he domain name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests bad faith.”  In that case, the panel also found that the domain name was registered in bad faith because of the short time between registration and an unsolicited offer to sell the name to the complainant.

As in Telstra, bad faith use was found in Seek-America Networks on the basis of the respondent’s inaction.  Bad faith registration was inferred from the addition of a hyphen to complainant’s common law mark SEEK AMERICA.  The panel found that had the respondent attempted to register the domain name seekamerica.com, it would have been blocked by the complainant’s prior domain name registration.[37]

Only one of the top 25 cases found no bad faith:  Shirmax Retail Ltd. v. CES Marketing Group[38] (cited 24 times), decided through the dispute resolution provider eResolution, found that registration of the generic term “thyme” in the domain name thyme.com for eventual resale to a third party did not constitute registration in bad faith.[39]

Confusing Similarity

The UDRP does not require that a complainant prove a likelihood of confusion between its mark and the respondent’s domain name.  It merely requires that the mark be identical to or confusingly similar to the domain name, with or without evidence of marketplace confusion.

In the majority of the top 25 decisions, the domain name and the allegedly infringed mark were identical, and the arbitrators therefore did not engage in a lengthy discussion of this factor.  Nevertheless, seven of the top 25 cases did analyze this issue.  The first to do so was Shirmax, in which the complainant owned the registered Canadian trademark THYME as well as two pending Canadian applications for THYME MATERNITY & Design and THYME MATERNITE & Design.  The complainant alleged that thyme.com was identical to its registered mark and confusingly similar to the pending applications.  The respondent countered that under Canadian trademark law, mere identity is not sufficient to prove likelihood of confusion.  The panel found this argument unpersuasive, holding that the clear language of Section 4(a)(1) of the UDRP suggests that identity is sufficient to meet the first element of the test even without any likelihood of confusion.[40] Thus, under the UDRP, where the complainant can show that the domain name is identical to its trademark, it is relieved from the burden of showing likelihood of confusion.

The requirement of identicalness was expanded to include “virtual identity” in CBS Broadcasting, Inc. v. LA Twilight Zone[41] (cited 23 times), where the panel found that the addition of a hyphen in the domain name twilight-zone.net rendered the domain name “virtually identical and confusingly similar to the Complainant’s TWILIGHT ZONE mark.”  See also, Seek America[42] (the addition of a hyphen in seek-america.com was insufficient to render that domain name different from complainant’s mark).

In General Electric Co. (cited 20 times), the complainant had registered the service marks GE CAPITAL and GECAL.  The respondent had registered the domain names gecapitaldirect.com and gecaldirect.com.  The panel found that the addition of the generic term “direct” to the complainant’s marks could not avoid a finding that the respondent’s domain names were confusingly similar to those marks.  The panel also found that the elimination of the space between “GE” and “CAPITAL,” the addition of the generic top-level domain name “.com,” and the use of lower case letters in the domain names were all distinctions without legal significance, since they were dictated by technological requirements and common practice.[43] See also, Rollerblade, Inc. v. Chris McCrady (cited 21 times)(the addition of a top-level domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to a complainant’s mark).[44]

Similarly, in Busy Body, Inc. v. Fitness Outlet, Inc.[45] (cited 20 times), the panel found that the addition of the prefix “e” to the complainant’s mark was insufficient to distinguish the disputed domain name, and that the domain name efitnesswarehouse.com was therefore confusingly similar to complainant’s FITNESS WAREHOUSE mark.

Legitimate Rights or Interests

In order to force the transfer or cancellation of a domain name, the complainant must prove that the respondent has “no right or legitimate interests in respect of the Domain Name.”[46]  Of the 25 most-cited decisions, seven have been frequently cited in relation to a respondent’s legitimate rights or interests in the domain name.

Paragraph 4(c) of the UDRP lists three non-exclusive circumstances in which the legitimate right to a domain name may be demonstrated.  These are:

(1) use of, or preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice of the dispute,

(2) public familiarity with respondent by the name, even in the absence of trademark or service mark rights; or

(3) a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

In all seven decisions cited for the respondent’s legitimate right or interest in a domain name, the panel examined the first example; the second example was only explicitly reached in one of these decisions.  The failure to address public familiarity may be explained because it is implicitly addressed by resolution of the first.  A respondent’s failure to use the name almost necessarily precludes its having an established reputation in that name; conversely, a respondent’s use of a name makes consideration of the second factor unnecessary. 

Ronson, the decision most often cited to establish a legitimate interest in a domain name, provides one example of an analysis combining the first and second factors.  The panel found that the lack of a trademark registration in any country for the RONSON mark was a sufficient basis for concluding that the respondent had no legitimate right or interest in the domain name.[47]   Likewise, in Parfums Christian Dior v. QTR Corporation[48] (cited 21 times), the panel found that the respondent had no legitimate interest in the domain name because complainant did not license or otherwise permit the respondent to use its DIOR mark or to apply for any domain name incorporating this mark. 

In a decision where the second example was clearly examined, Compagnie de Saint Gobain v. Com-Union Corp.[49] (cited 25 times), the panel looked at the respondent’s right to the domain name saint-gobain.net.  The panel found that respondent was not known by the name Saint Gobain, and because he did not meet the other factors, had no rights to the name.

The third example, a legitimate non-commercial or fair use of the domain name, is examined in two of the most-cited decisions.  The panel in Saint Gobain evaluated both non-commercial use and fair use.  First, the panel examined the respondent’s contention that the domain name in question belonged to “Christianity, to history, to geography and to the world patrimony.”  These alleged non-commercial uses were held not to give respondent a legitimate interest in the domain name.  The panel also rejected respondent’s fair use claim, i.e., that the domain name was originally only used to discuss business strategies and other matters relevant to shareholders of the complainant.  Fair use was precluded because of the bad faith in choosing a domain name that consisted solely of complainant’s trademark when it could have chosen a domain name “adequately reflecting both the object and independent nature of its site.”[50]

Rollerblade also examined a respondent’s right to a non-commercial use of a domain name.  Respondent had registered the domain name rollerblade.net for his nephew’s birthday, “so he and his friends could have a ‘neat’ e-mail address and a website to show off their ‘rollerblading’ pictures.”[51]  Neither patronage of a company’s products nor enthusiasm for a company’s products was held to show “the slightest indication of a legitimate trademark interest . . . that would allow Respondent to claim a legitimate right or interest.”[52]

Finally, in Ingersoll-Rand and in Quixtar Investments v. Scott A. Smithberger and QUIXTAR-IBO[53] (cited 22 times), the panels considered facts that are not listed as examples in the UDRP.  Both decisions added an examination of distinctiveness to the legitimate rights analysis.  In Ingersoll-Rand, the panel held that the respondent was unlikely to show a legitimate right in the hyphenated name, since it was venerable and distinctive.  In Quixtar the panel found that, because the mark QUIXTAR was distinctive, the only basis for a defense would be if respondent could show that it had prior rights in the name.

Conclusion

The jurisprudence of domain name dispute resolution will continue to evolve as more disputes are decided.  Although many decisions are limited to their specific facts, those that are cited most often in subsequent decisions show the emerging consensus of panelists as to the fundamental principles for adjudication of domain name disputes. 

 

Frequently Used Quotations and Citations

The concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concept.”  Telstra Corporation Limited v. Nuclear Marshmallows, WIPO D2000-0003.

The value which Respondent seeks to secure from sale of the domain name is based on the underlying value of Complainant’s trademark.” Educational Testing Service v. TOEFL, WIPO D2000-0044.

Respondent’s failure to submit a substantive answer in a timely fashion results in acceptance as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO D2000-0009.

The Complainant need not have a registered trademark or service mark in order to invoke the UDRP.  Julia Roberts v. Russell Boyd, WIPO D2000-0210.

Registration of a trademark is not required to prove one’s legal rights in the trademark. Jeanette Winterson v. Mark Hogarth, WIPO D2000-0235.

 Respondent has no rights to the domain name where “Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.” Compagnie de Saint Gobain v. Com-Union Corp., WIPO D2000-0020.

Even “perfunctory preparations . . . for use of the domain name in bona fide commerce are sufficient to demonstrate the rights or legitimate interests” of the domain name holder. Shirmax Retail Ltd. v. CES Marketing Group, AF-0104.

“The addition of a hyphen does not decrease the confusing similarity between the domain name and the mark.” CBS Broadcasting, Inc. v. LA Twilight Zone WIPO D2000-0397.

 “Since the essence of the Internet is world-wide access, consideration of the propriety of domain name registrations cannot be confined to comparisons with trademark registrations or other rights in the country where the site is hosted.”  Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO D2000-0014.

“The domain name is so obviously connected with the complainant and its services that its very use by someone with no connection with the complainant suggests bad faith.”  Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO D2000-0277.

Complainant must prove both registration in bad faith and use in bad faith. World Wrestling Federation Entertainment, Inc. v. Bosman, WIPO D99-0001.


APPENDIX A


Rank

 
Times
Cited


Case No.


Domain Name(s)


Case Name


Summary/ Holding

1

184

D2000-0003

telstra.org

Telstra Corporation Limited v. Nuclear Marshmallows

-- Inaction can constitute bad faith.
-- Active steps by the respondent to conceal his identity is evidence of bad faith

2

60

D2000-0044

toefl.com

Educational Testing Service v. TOEFL

-- While an offer to sell the domain name to the complainant/trademark owner is evidence of bad faith, an offer to sell the domain name on a broker website does not necessarily constitute bad faith.

3

56

D2000-0009

talk-city.com

Talk City, Inc. v. Michael Robertson

--  E-mail from respondent received two days after due date accepted, but given no weight because it lacked certification.
-- Use of domain name to attract consumer to website constitutes bad faith registration.
-- In the absence of a response, it is appropriate to accept as true all allegations of the complaint.

4

53

D2000-0210

juliaroberts.com

Julia Roberts v. Russell Boyd

-- Complainant is not required to have a registered trademark or service mark.

5

40

D2000-0235

jeanettewinterson
.com, .net, .org

Jeanette Winterson v. Mark Hogarth

-- The word “trademark” includes unregistered common law rights in a name or mark.

6

34

D2000-0004

americanvintage.com

Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown

-- The failure of a party to submit evidence on facts in its control may permit the court to draw an adverse inference regarding those facts.

7

25

D2000-0403

charlesjourdan.com

Charles Jourdan Holding AG v. AAIM

-- The panel may draw adverse inferences from the respondent’s failure to respond to the complaint.

7

25

D2000-0032

wheatthins.com
wheatsworth.com
bettercheddars.com
harvestcrisps.com
milk-bone.com

Nabisco Brands Company v. The Patron Group, Inc.

-- Ownership of more than 40 domain names, many of which are well known product names, suggests an intent to profit from the activities of others.
-- Offer to sell domain name for more than costs is evidence of bad faith registration and use.

7

25

D2000-0020

saint-gobain.net

Compagnie de Saint Gobain v. Com Union Corp.

-- Registration of a trademark as a domain name for use as a website on which shareholders of the mark owner could exchange views is not a free speech issue

7

25

D2000-0001

musicweb.com

Robert Ellenbogen v. Mike Pearson

-- Acquisition of a domain name for the purpose of selling to the trademark owner is evidence of bad faith.
-- When both parties are domiciled in the same country, the laws and principles of that country will be taken into account.

11

24

AF-0104

thyme.com

Shirmax Retail Ltd. v. CES Marketing Group

-- Registration of a generic term as a domain name for eventual resale to a third party is not bad-faith registration.

12

23

D2000-0397

twilight-zone.net

CBS Broadcasting, Inc. v. LA Twilight Zone

-- Use of a hyphen between the words of the complainant’s mark does not decrease the confusing similarity between the mark and the domain name. 

12

23

D2000-0163

veuveclicquot.org

Veuve Cliquot Ponsardin v. The Polygenix Group Co.

-- When the domain name is obviously connected with a well-known product, its very use by someone with no connection to the product is bad faith.

14

22

D2000-0138

quixtar-sign-up.com

Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO

-- The use of false registration information constitutes bad faith.

14

22

D2000-0011

ronson.com

Ronson Plc v. UnimetalSanayi

-- A request for $70,000 to transfer the domain name is evidence of bad faith registration.

16

21

D2000-0429

rollerblade.net

Rollerblade, Inc. v. Chris McCrady

-- The respondent must have a legitimate trademark interest in order to claim a right in the domain name.

16

21

D2000-0023

dior.org

Parfums Christian Dior v. QTR Corp.

-- Notation in the Whois record stating “This domain is for sale” is evidence of bad-faith registration and use.

16

21

D2000-0014 &

D2000-0015

theeconomictimes.com

thetimesofindia.com

Benett Colman & Co. v. Steven Lalwani; and Benett Coleman & Co. v. Long Distance Telephone Co.

-- That Complainant’s trademark registrations may have lapsed is irrelevant where complainant has substantial reputation in its marks.

16

21

D99-0001

worldwrestling-federation.com

World Wrestling Federation Entertainment, Inc. v. Bosman

-- Proof of both bad faith registration and bad-faith use is required.
-- Offer to sell domain name for amount in excess of out-of-pocket costs constitutes bad faith.

20

20

D2000-0394

gecapitaldirect.com

gecaldirect.com

General Electric Company v. FORDDIRECT.COM, INC.

-- Adding a generic term to a mark does not preclude similarity to the mark.
-- Bad faith was suggested by registering over 50 domain names with the intent to prevent trademark owners from using their marks in corresponding domain names.

20

20

D2000-0277

deutsche-bank-ag.com

Deutsche Bank AG v. Diego-Arturo Bruckner

-- Respondent is presumed to have known of the complainant’s marks.  – because famous?
-- When the domain name is obviously connected with a well-known product its very use by someone with no connection to the product is bad faith.
-- The domain name was registered in bad faith because of the short time between the respondent’s registration and the unsolicited offer of sale to the complainant.

20

20

D2000-0131

seek-america.com

Seek America Networks, Inc. v. Tariq Masood

-- Complainant may proceed on the basis of common law rights.
-- Bad faith can be inferred from the respondent’s use of a hyphen as a device to obtain the domain name.

20

20

D2000-0127

efitnesswarehouse.com

Busy Body, Inc. v. Fitness Outlet, Inc.

-- The addition of an “e” does not distinguish a domain name from a registered mark.

20

20

D2000-0021

ingersoll-rand.net
ingersoll-rand.org
ingersollrand.org

Ingersoll-Rand Co. v. Frank Gully

-- Use of complainant’s mark in domain name to link to pornographic website constitutes bad faith registration and use.

 

The authors are intellectual property attorneys in the San Francisco office of Bingham McCutchen,  They can be reached at trent.norris@bingham.com, barbara.friedman@bingham.com, and rebecca.hooley@bingham.com or at 415-393-2000.

[1]              The Internet Corporation for Assigned Names and Numbers adopted the UDRP on August 26, 1999, and approved implementing documents on October 24, 1999.  In addition to the actual Policy, there is a set of Rules for the UDRP as well.  As is common practice, we use the term UDRP to refer to both the Policy and the Rules.

[2]              In this paper we use the terms “panel” and “panelist” to refer both to solo decision-makers and to the participants on three-member panels.

[3]              The twenty-five most cited cases are listed in Appendix A.  The authors offer their gratitude to Wendy Seltzer of the Berkman Center for Internet and Society at Harvard Law School for assisting their research by developing a software program to track the number of times each decision was cited.

[4]              The URL is:  http://www.icann.org/udrp/udrp.htm.

[5]              The text of UDRP decisions can be searched at http://www.icann.org/udrp/udrpdec.htm or at http://www.cyber.law.harvard.edu/icann/search/udrp.asp.

[6]              Rule 10(d).

[7]              Policy § 4(c).

[8]              See Policy § 4(b).

[9]              Panelists will, however, occasionally conduct their own investigations.  In the SeekAmerica case, in the absence of any information as to the business or activities of the respondent, the panel collected information on its own by reviewing the respondent’s website.  The panel took this step pursuant to Rule 10(b) of the UDRP.

[10]            Julia Roberts v. Russell Boyd, WIPO D2000-0210 (cited 53 times); Jeanette Winterson v. Mark Hogarth, WIPO D2000-0235 (cited 40 times).

[11]             Bennett Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO D2000-0014.

[12]            Id.

[13]            SeekAmerica Networks, Inc. v. Tariq Masood and Solo Signs, WIPO D2000-0131.

[14]            Talk City, Inc. v. Michael Robertson, WIPO D2000-0009.

[15]            Id.

[16]            Another response sent on the eve of the deadline for the panel’s decision, long after the response was due, was also disregarded because the respondent had failed to show extraordinary circumstances, as required by Rule 15(b), that would merit consideration of its late filing.

[17]            IdSee also, Charles Jourdan Holding AG v. AAIM, WIPO D2000-0403 (cited 25 times) (finding it appropriate to draw adverse inferences from respondent’s failure to respond to the complaint); Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, WIPO D2000-0004 (cited 34 times) (holding that the panel is entitled to draw such inferences as it feels just from the respondent’s failure to respond).

[18]            Talk City, Inc. v. Michael Robertson, WIPO D2000-0009.

[19]            Id.

[20]            Id.

[21]            Id.

[22]            Id.

[23]            Telstra Corporation Limited v. Nuclear Marshmallows, WIPO D2000-0003.

[24]            Id.

[25]            Providing false registration details that suggested an affiliation with the trademark owner was also found to constitute evidence of bad faith in Quixtar Investments, Inc. v. Smithberger and Quixtar-IBO, WIPO D2000-0138.

[26]            Educational Testing Service v. TOEFL, WIPO D2000-0044.

[27]            Ingersoll-Rand Co. v. Frank Gully, WIPO D2000-0021.

[28]           

[29]             General Electric Company v. FORDDIRECT.COM, INC., WIPO D2000-0394), registration of over fifty domain names with the intent to prevent trademark owners from using their marks in corresponding domain names, .

[30]            Nabisco Brands Company v. The Patron Group, Inc., WIPO D2000-032

[31]            Ronson Plc v. Unimetal Sanayi, WIPO 2000-0011.

[32]            World Wrestling Federation Entertainment, Inc. v. Bosman, WIPO D99-0001.

[33]            Robert Ellenbogen v. Mike Pearson, WIPO D00-001.

[34]            Parfums Christian Dior v. QTR Corp., WIPO D2000-0023.

[35]            Veuve Cliquot Ponsardin v. The Polygenix Group Co., WIPO D2000-0163

[36]            Deutsche Bank AG v. Diego-Arturo Bruckner, WIPO D2000-0277.

[37]            Seek America Networks, Inc. v. Tariq Masood, WIPO D2000-0131

[38]            Shirmax Retail Ltd. v. CES Marketing Group, AF-0104.

[39]            Significantly or not this is also the only case among the top 25 that was not decided by a panel from the World Intellectual Property Organization.

[40]            Shirmax Retail Ltd. v. CES Marketing Group, AF-0104.

[41]            CBS Broadcasting, Inc. v. LA Twilight Zone, WIPO D2000-0397.

[42]            Seek America Networks, Inc. v. Tariq Masood, WIPO D2000-0131

[43]            General Electric Company v. FORDDIRECT.COM, INC., WIPO D2000-0394

[44]            Rollerblade, Inc. v. Chris McCrady, WIPO D2000-0429.

[45]            Busy Body, Inc. v. Fitness Outlet, Inc., WIPO D2000-0127.

[46]            Policy § 4(b). 

[47]            Ronson Plc v. Unimetal Sanayi, WIPO 2000-0011.

[48]            Parfums Christian Dior v. QTR Corporation, WIPO D2000-0023.

[49]            Compagnie de Saint Gobain v. Com-Union Corp., WIPO D2000-0020.

[50]            Id.

[51]            Id.

[52]            Id.

[53]            Quixtar Investments v. Scott A. Smithberger and QUIXTAR-IBO, WIPO D2000-0138.


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